Thursday, February 24, 2011

Yesterday a Texas-based patent holder named Summit 6 filed a patent infringement suit with the US District Court for the Northern District of Texas against Research In Motion, Samsung, Facebook, Photobucket and Multiply. Actually, that's the first smartphone patent suit targeting (among others) Android-based devices in 2011. There have been interesting developments in some other such cases during the first part of this year, such as infringement disclosures made in Skyhook vs. Google, but this Summit 6 complaint is the first new suit of its kind this year.

I then found a Summit 6 press release that announced the suit and was distributed over PRNewswire. It describes the patents as covering "technology used to quickly resize, compress and transmit digital photographs and other media" and "software and methods for pre-processing media, such as digital photographs, before transmission to a remote location." The patented inventions are claimed to deliver increased ease-of-use, significantly faster upload times, reduced network traffic, and enable extensive digital storage and reprocessing by remote servers. All of that describes some kind of efficiency gain -- I'm not sure this was really "groundbreaking" (another word that comes up in the press release), but the USPTO certainly found it deserving of two patents.

Summit 6 claims to have successfully licensed those patents to many customers:

"For more than 10 years, Summit 6's groundbreaking technology has been successfully utilized, with permission, by numerous companies around the world, including more than 100 newspapers and online marketplaces in the United States and United Kingdom. The company's inventions, widely commercialized through Summit 6 predecessors PictureWorks Technology, Inc., Internet Pictures Corporation (IPIX) and AdMission Corporation, have changed the way the public uses digital media on a daily basis."

I looked at the list of accused Samsung products to ascertain that this is yet another patent infringement suit targeting (even if not exclusively) Android, after a dozen of them were filed last year. And it is. The list of accused Samsung products is long, and it contains a variety of Android-based products like the Nexus and Galaxy phones and the Galaxy Tab. Just because it's an unusually long list of accused products, these are the Samsung offerings listed in the complaint:

Samsung is the only Android device maker targeted at this stage. Samsung (like RIM) has an operation in Texas, where the suit was filed, but other defendants like Facebook were targeted without having an office in that state (just for doing business there). Should Samsung end up paying royalties for those patents, I'm sure that other Android device makers will also be required to pay -- if it hasn't happened already...

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Yesterday the law firm of Morgan, Lewis & Bockius filed a trademark suit with the US District Court for the Northern District of California (where Xoom Corporation is based) against Motorola Mobility and affiliated legal entities, asking the court on Xoom Corporation's behalf not only for a permanent injunction but also for a "temporary restraining order and/or preliminary injunction". Should that interim relief be granted to Xoom Corporation, it would disrupt the launch of Motorola's iPad competitor, which runs on Honeycomb, the latest (and tablet-optimized) version of Google's Android mobile operating system.

Motorola's alleged trademark infringement is described as "willful and intentional conduct" for which Xoom Corporation believes to be entitled to "treble damages".

Being served a complaint like this on the eve of the launch party looks like a spoiler. But Motorola must have known about this trademark holder for a long time, given that Xoom Corporation owns the Xoom.com Internet domain, has been operating under that name "since at least as early as 2003" according to the complaint, and filed a couple of US trademark registrations, the earliest one of them in 2004 (Federal Registration Number 2,909,931). So Motorola decided to go ahead with its tablet launch regardless of not having worked things out with the Xoom e-payment company. The court will now have to decide whether Motorola made the right decision.

Motorola presumably believes that the asserted trademark is protected only in other markets than the ones that are relevant to tablet computers. In October 2010, Motorola filed its own Xoom trademark registration. I still wouldn't view Xoom's action as just a ridiculous "troll" suit.

According to Wikipedia, Xoom Corporation was founded in 2001. In its two most recent rounds of financing, which took place in 2007 and 2010, it received a total of $53 million of venture capital from three world-class venture funds (Sequoia Capital, which invested in Apple in the 1970s -- what an irony -- and more recently in Internet businesses like AdMob and LinkedIn; New Enterprise Associates; and Fidelity Ventures).

A company of that nature and stature is less likely than a smaller one to file a suit against a major player like Motorola only to make a quick buck in exchange for dropping a pointless complaint. It's possible that Xoom Corporation really wants Motorola to rename its tablet computer and wouldn't settle even for a check over several million dollars. Xoom Corporation may want to defend its exclusive use of that brand.

It may not be easy to prove that a tablet computer creates confusion about the identity of an e-payment company, but I've seen trademark suits in which the relevant markets had much less of a connection. After all, it's likely that many consumers will use the Xoom tablet for online transactions. By contrast, there's another Xoom trademark belonging to a Texas company and relating to office supplies. That one would really be difficult to assert against a tablet computer. It would probably have to be about as famous as BMW or Coke to have a case.

If you remember a web hosting company named Xoom.com from the late 1990's (its shares traded on NASDAQ before being acquired by NBC), Xoom Corporation bought the Internet domain that previously belonged to that one.

Another consideration about the strength or weakness of the case: while I've seen major law firms represent dubious cases, the statistical likelihood of a complaint being at least somewhat serious is increased by the involvement of a large and reputable law firm. Morgan Lewis has nearly 1,300 lawyers (plus approximately 1,700 other professionals) in 23 offices on three continents. On its website, it lists "rankings and accolades" that are reasonably recent and significant.

We'll see whether Motorola will be forced to rename the Xoom tablet. Android's intellectual property issues are primarily about patents and copyrights. But it's worth noting that Android device makers also have to be careful about how Google leverages its related trademarks.

Theoretically, parts of the Android codebase are available under diffferent open source licenses and could be used without entering into a contractual relationship with Google. But in practice, device makers want to be able to use the Android trademark (and in some contexts also the Google brand) for their products, and they need access to the official Android app market. At that point, Google severely restricts open source freedoms and imposes a number of terms and conditions.

The official reasoning is that those rules are needed for compatibility's sake. To some extent that's true, but it's also true that Google uses those terms and conditions and leverages trademarks for the commercial exploitation of Android.

At least one company has already taken legal action because it believes that Google unfairly uses that leverage in order to unfairly restrict choice and foreclose competition. That company is Skyhook, a developer and operator of a geolocation/geotagging solution. It filed two simultaneous lawsuits against Google a few months ago: one related to Google's commercial conduct (and the way it leverages the Android trademark) and another one for patent infringement. I blogged about those two suits last week after I saw an infringement disclosure document that specifically mentioned Android.

Third-party trademark assertions against Android-based products, like the Xoom complaint, will usually affect only one vendor at a time. But the issues raised in the Skyhook vs. Google dispute relate to restrictions imposed upon the entire Android ecosystem, limit choice for all Android users, and make mockery of the concept of open source (let alone free software).

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Tuesday, February 22, 2011

Just before Washington's Birthday weekend, U.S. District Judge William Alsup gave Google short shrift, ruling on Friday that he does not even want to give consideration at this stage to an envisioned motion for summary judgment against Oracle's copyright infringement allegations. Google had requested a leave (i.e., an opportunity to make such a filing) and claimed that those "[copyright] issues are ripe and can be decided without further discovery as a matter of law". But the District Court for the Northern District of California came down on Oracle's side. I'll quote and explain the two most important sentences:

"Having considered both parties' submissions, this order finds that good cause has not been shown to engage in a summary judgment battle at this time."

This means: Google has failed to convince the court that Oracle's copyright infringement claims lack substance to such an extent that there's no need for further scrutiny. Whether Oracle will ultimately prevail is another question, but there's no way that its allegations could be viewed as bogus claims at this early stage. No surprise here.

"Google's request is DENIED without prejudice to renewal after a more complete evidentiary record has been developed through discovery."

The second half of this means that the earliest point in time at which Google may get another bite at the apple will be when there's more evidence on the table as a result of continued discovery. While the wording could be interpreted as any additional production of relevant evidence potentially enabling such a motion, I guess this means in practical terms that Google will have to wait for completion of discovery, at least of the part of discovery that's related to those copyright infringement allegations. And even then it will be a long shot, considering that the judge sided with Oracle's position within hours of receiving it and that the decision comes across as a no-brainer.

Oracle's successful letter in opposition to Google's motion is, in my opinion, the single most interesting document in this whole lawsuit to date as far as the copyright part of the case is concerned (on the patent side, the detailed claim charts that fill approximately 400 pages are no less impressive).

Here are some quotes concerning the amount of evidence believes to have found so far:

"Google derived its Android code from the specifications for hundreds of Oracle’s copyrighted Java files."

In the court filing, "hundreds" is italics. I boldfaced it here because my quotes are all in italics, so I needed to set the word apart. And it really is a bold statement, figurately speaking.

While copyrights can be registered in the US, registration isn't mandatory the way it works with, for example, patents. So the total number of allegedly infringed copyrights can be higher if non-registered ones are included. Also, a copyright registration can contain many source code files, so this number isn't inconsistent with the allegation that hundreds of Java files were exploited by Google.

If you read my blog post on evidence that I found (about a month ago) concerning this case, you may remember that I showed (among other things) seven source files that I juxtaposed to decompiled Oracle/Sun code. One of those files had been presented by Oracle in its amended complaint; the other six were found by me in an adjacent directory. Now Oracle arrived at the same conclusion concerning the genesis of those files.

Why do they find one more file -- 8 vs. 7? There are two possibilities. Either "No. 8" is in a directory I didn't look at (there were too many for me to look at all of them) or they mean a file named AclEnumerator (which I also saw and which looked like decompiled code to me, but which I didn't publish because I couldn't produce the same striking similarities that the other seven files showed).

In that blog post I had also mentioned a ZIP archive containing 37 files with Sun copyright notices. What Oracle's letter says doesn't indicate that those files have been processed in discovery so far. Maybe we'll find out much later. But the decompiled files were the more important ones anyway.

At the time there was some discussion over whether that code was actually shipped with any Android devices. I commented on that debate in a follow-up post: interestingly, some official source availability packages of major Android OEMs such as Samsung, LG and Motorola included material I had identified as presumably infringing.

The fact that Oracle successfully opposed Google's motion and the statements made by Oracle in that context certainly show that I had a point about the copyright part of the case. That said, the patent part is the one that Google must be more worried about. As I explained in a previous post, there are ways in which losing the copyright part could also affect Google's credibility with a view to the patent part.

Certain passages of Oracle's letter explain why Oracle believes that more evidence may still be found as discovery unfolds:

"Oracle’s copyright infringement contentions [...] represent only a snapshot of our case taken at the time they were submitted."

"Google has not yet produced all of its source code--and none of its proprietary code. Nor has Google produced the requested change log for its source code repository."

"Moreover, when we take depositions of Google’s developers, we anticipate uncovering the full scope of Google’s copying. Much of it may be disguised copying, which our source code comparison to date may not have uncovered."

"Some of Google’s Android developers previously worked for Sun or had access to proprietary Oracle materials. A plaintiff may prove copying by showing that a defendant had access to the copyrighted work and that the accused work is substantially similar to it. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). 'Where a high degree of access is shown,' the Ninth Circuit 'require[s] a lower standard of proof of substantial similarity.' Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004)."

Some believed that Google's attempt to have the copyright part of the suit thrown out was part of a strategy to stall.

Without the copyright part of the suit continuing (as it does), Google's recent requests for reexamination of some of the patents asserted by Oracle (by now, such requests have been put in with respect to five of those seven patents and might still be filed for the remaining two) could have served as an argument in favor of staying the case pending reexamination. But as Scott Daniels, the lawyer who first reported on those reexamination requests, pointed out, "reexamination could not resolve the copyright allegations", a fact that Scott considers one of a couple of reasons for which a Google motion to stay might not be granted.

While it may be true that Google has an interest in playing for time, I'm not a big believer in that strategy.

Also, I believe that even if Google somehow managed to stall the current court case, Oracle could always step up the pressure in some other ways. For example, Oracle could file ITC complaints that might result in import bans against major Android device makers within 16 to 18 months.

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Friday, February 18, 2011

The usual justification put forward by companies enforcing patents against others is that they have to protect their rights as innovators. At a formal level that's true, but often it's really about money and sometimes about weakening competitors. The dispute between geolocation company Skyhook and Google might be a rare exception of patents being asserted in defense of fair and open competition.

Paradoxical as it may seem, this patent assertion against Android -- which could in a worst-case scenario require Google to drop its geolocation/geotagging functionality -- almost comes across as a defense of open source principles. If Google didn't compromise the openness of Android through its trademark license agreement with device makers (more on that later), Skyhook might never have started this infringement action. But since Google tried to preclude Skyhook from some major Android-related opportunities through what Skyhook alleges are unfair, arbitrary and ultimately anticompetitive actions, this conflict ended up in court.

In mid September 2010, Skyhook filed a pair of lawsuits against Google: a patent infringement complaint with the US District Court for the District of Massachusetts (a federal court), and a complaint over trade practices with the Superior Court of Massachusetts.

On Monday, Skyhook filed its preliminary infringement disclosure in the patent case. That's a document providing the latest detail on the patent infringement allegations that were raised in the original complaint. It comes with claim charts (tables that show the allegedly infringed patent claims on one side and a description of the infringing material on the other).

Skyhook wants an injunction and a damage award related to four patents, all of which relate to the idea of determining a geographic location based on nearby Wi-Fi access points (which are previously identified by having a GPS-equipped car traverse a target area. Those patents are relatively new: the applications were filed in 2004 and 2005. Here's a list of the patents-in-suit:

U.S. Patent No. 7,305,245 on "location-based services that choose location algorithms based on number of detected access points within range of user device"

According to Skyhook's preliminary infringement disclosure, certain claims of each of those patents are infringed by "at least Google Location Services, including, but not limited to, Gears Geolocation API and its implementation in Toolbar, Chrome browser and Mozilla Firefox browser; Client Location Library, and its implementation in Mobile Search with My Location, Google Maps and Google Latitude; and Network Location Provider, and its implementation in the Android Operating System."

Android and the other product and service names hadn't been mentioned in the original complaint. A connection with Android was likely, and now it's certain that this is yet another Android-related lawsuit. But I said before that this one is special because of the fair and open competition context. Skyhook is neither a troll nor a bully. On the contrary, the company wanted to contribute to the Android ecosystem in various ways and apparently started this action to defend itself against alleged bullying by Google.

The trade-related complaint filed with the state court levels the following accusations against Google:

"intentional interference with contractual relations"

"intentional interference with advantageous business relations"

"violations of Massachusetts law prohibiting unfair and deceptive trade acts"

"practices stemming from Google's anticompetitive conduct and Google's bad faith, knowing and intentional interference with plaintiff Skyhook's contractual and business relations with Motorola, Inc. and other current and potential customers"

Skyhook claims to have "suffered actual damages that exceeds tens of millions of dollars" because Google stopped competing fairly once it "realized its positioning technology was not competitive". Allegedly, "in direct opposition to its public messaging encouraging open innovation, Google wielded its control over the Android operating system, as well as other Google mobile applications such as Google Maps, to force device manufacturers to use its technology rather than that of Skyhook", forcing them to "terminate contractual obligations with Skyhook" or to discourage them from partnering with Skyhook in the first place.

The quality of Skyhook's service depends on a large number of users whose anonymized data are evaluated to update and expand a location "beacon" database. This lost opportunity is another type of damage Skyhook claims to have suffered from Google's behavior.

The complaint highlights what appears to be a major discrepancy between Google's claims that Android is open and its actual practices when its business interests are concerned. One of the document's headlines puts it like this:

"Google publicly represents Android as open source and pro-innovation, then unfairly uses its exclusive oversight of the platform to force OEMs to use Google Location Service"

Skyhook also alleges the following:

"On information and belief, Google has notified OEMs that they will need to use Google Location Service, either as a condition of the Android OS-OEM contract or as a condition of the Google Apps contract between Google and each OEM. Though Google claims the Android OS is open source, by requiring OEMs to use Google Location Service, an application that is inextricably bundled with the OS level framework, Google is effectively creating a closed system with respect to location positioning. Google's manipulation suggests that the true purpose of Android is, or has become, to ensure that 'no industry player can restrict or control the innovations of any other,' unless it is Google."

That last sentence is a "more equal than others" type of allegation. Skyhook really seems to be angry about the fact that it lost some very significant business as a result of Google's conduct. In the complaint, Skyhook talks at length about its efforts to develop a business partnership with Motorola (for nearly four years) and how Motorola viewed Skyhook's location service as an opportunity for differentiating itself from other Android vendors. Skyhook and Motorola entered into a licensing agreement in late 2009. That relationship was then announced on April 27, 2010, but Skyhook says that "shortly thereafter, Andy Rubin (Google's Vice President of Engineering overseeing development of Android) called [the CEO of Motorola] multiple times to impose a 'stop ship' order on Motorola preventing Motorola from shipping Android wireless devices featuring Skyhook's XPS client software."

Google allegedly made various demands that Motorola and Skyhook didn't meet, so Skyhook lost this business opportunity.

Keep in mind Andy Rubin founded the company that started the Android project and was acquired by Google. On Twitter, he has defined open as a set of commands with which one can download and compile the Android source code into an executable. If Skyhook's allegations prove true, it will be remarkable that such an outspoken advocate of openness as Andy Rubin prevented Motorola from exercising one of the fundamental rights concerning open source software: modifying and/or combining it with other software.

The complaint also talks about an unnamed "Company X, a mobile OEM with substantial global market share int he Android market", which "was committed to rolling out its next line of Android phones preloaded with Skyhook's XPS technology." When Motorola learned about that plan, it asked Google for equal treatment, which means that Google exerted similar pressure on that unnamed other company as it previously did on Motorola. Ultimately, Skyhook says, "Company X was forced to drop [Skyhook] XPS and continued the launch of its Android device with Google Location Service. As a result, Skyhook has lost millions in expected royalties under the Company X Contract."

One of the court documents that entered the public record in recent months provides clues that "Company X" might be Samsung.

A key instrument that Skyhook claims Google used against it is the Android "Compatibility Definition Document" (CDD). You can find a link to its current version in the left column of this web page.

In Google's own words, "[t]he CDD enumerates the software and hardware requirements of a compatible Android device." If OEMs like Motorola want to use the Android trade mark and offer the Google Apps market, they must comply with that document and pass the Compatibility Test Suite (CTS). The idea is that some but not all customization of Android by OEMs is allowed. Theoretically, most of the Android codebase is available on open source terms (except for some closed-source Google-owned components that are very important) and could be modified. But if OEMs exercise their open source rights beyond what's allowed by Google, they aren't allowed to use the all-important Android trademark. From a commercial point of view, that's pretty much a complete show stopper.

The CDD was also mentioned by Oracle in a recent court filing in its case against Google. I reported on it in a previous blog post. Oracle claimed that if the Android codebase as published on the Internet infringes on its Java-related patents, the court should assume (unless Google proves the opposite) that officially licensed Android devices do so. Google denied this and pointed to the open source nature of Android and the possibility of OEMs making modifications. But Oracle stressed that the alleged infringements were found in parts of the Android codebase that OEMs aren't allowed to modify if they want to retain their license to use the Android trademark.

In the opinion of some people, Google's efforts to make OEMs adhere to a common party line don't go far enough. Fragmentation is a major Android worry (the biggest one of all according to ZDNet's open source blog). I've experienced it myself a few times already when I asked friends with Android phones some technical question and they couldn't help me because they used different devices or even the same one (I have a Samsung Galaxy S) but with different operating software versions.

Google argues it needs to ensure compatibility by defining common rules for all Android OEMs. However, Skyhook apparently believes that Google’s control goes beyond simply ensuring compatibility. Skyhook argues it should be allowed to supply its geolocation solution to companies like Motorola and that Google interfered only because it wants to impose its own offering on OEMs.

Skyhook believes that Google doesn't apply consistent standards to what is and what isn't allowed as an enhancement of Android. In its trade-related complaint, Skyhook highlights that "Google's established practice in determining Android compliance consists two steps".

The first one requires an Android-based device "to be run against the Compatibility Test Suite (CTS), a software-based test platform that objective evaluates whether the device and software are compatible with the published Android specifications."

What Skyhook considers unfair is the second step, "a review of the device and software based on" the CDD, which it calls "an amorphous outline of additional, non-standardized requirements". Skyhook says:

"This entirely subjective review, conducted solely by Google employees with ultimate authority to interpret he scope and meaning of the CDD as they see fit, effectively gives Google the ability to arbitrarily deem any software, feature or function 'non-compatible' with the CDD."

Google defends its right to derive commercial value from its trademarks with the usual rhetoric of right holders, including the often-heard accusation that others simply want a "free ride".

Should Skyhook make headway with its lawsuits against Google, or with at least one of the two cases, then it might be able to force Google to open the Android market for alternative geolocation solutions. That's why I said in the beginning that this is a special case in which patents might have the effect of forcing an "open source" vendor to grant open source freedoms to its ecosystem -- which includes the choice of a geolocation solution (be it closed source or open source software). In that event, the end might justify the means.

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Thursday, February 17, 2011

Through an eWEEK article I became aware of a patent law firm's reexamination alert, according to which Google asked the US Patent & Trademark Office (USPTO) to reexamine four of the seven Java-related patents asserted by Oracle. [Update] A day later, it became known that Google also put in a reexamination request concerning a fifth Oracle patent.

The author of those posts, Scott Daniels of Westerman Hattori Daniels & Adrian, sees a possibility that Google may soon request reexamination of the other asserted patents as well, and might move "to stay the case pending completion of the reexamination proceedings, but such a stay might not be granted since Google and Oracle America are direct competitors and since reexamination could not resolve the copyright allegations."

Concerning the latter, Google yesterday asked the court for permission to file a motion for summary judgment, a procedural move by which Google would like to have Oracle's copyright infringement allegations thrown out in the short term. Google asserts the following:

"These [copyright] issues are ripe and can be decided without further discovery as a matter of law, thereby simplifying the issues and conserving resources."

If the court gives Google the requested opportunity to file a motion, Google's counsel promises to do so "no later than February 28."

In the following sections I'll comment on the patent reexamination request, the attempt to have the copyright part of the suit dismissed quickly, and on the overall situation in that dispute, which looks like it's going to turn into an epic battle (if it isn't already).

Requests for reexamination of patents-in-suit are common. Frankly, I wonder why it even took so long. When Oracle sued Google in August, I thought this was going to happen within a few months.

As a long-standing opponent of software patents, I really don't like the seven patents Oracle asserted. Those aren't so-called "computer-implemented invention" patents that have a technical effect beyond software. They are just about executing instructions and organizing a computer's memory. Theoretically one could put all of that on a chip, but practically this is just about software.

I believe Google and the USPTO would do the world except Oracle a favor if some or ideally all of those patents could be invalidated. They are so broad that they are by no means specific to the Java programming language: I have looked at them and believe they read on most virtual machines of our times.

What I'd like to see happen and what I think will happen are two different things. I wouldn't be surprised if a couple of those patents were invalidated, or if the scope of some of the patent claims in question was narrowed. It depends on which arguments and what kind of prior art Google is able to present to the USPTO. But some of those patents -- probably most of them -- will survive. And as Scott Daniels explained, the lawsuit may just continue anyway.

Also, I doubt that the seven patents Oracle asserted are the only ones they have in their portfolio that could be used against Google. Oracle likely has even more patents that it could assert against Dalvik or other parts of Android. It's also possible that Oracle owns patents that could put Google under pressure in some of its other business areas, if Oracle ever felt forced to assert them.

This is already the second attempt by Google to defeat Oracle's copyright infringement allegations at an early stage. Google said that Oracle's original complaint wasn't specific enough concerning which Oracle copyrights were allegedly infringed by which Google software. The court agreed, and Oracle amended the complaint accordingly.

I watch a lot of cases like this. Google isn't the only defendant eager to get rid of a part of a lawsuit at the earliest opportunity. But I personally don't think Oracle's copyright case is so weak that this is likely to happen.

While I concur with Google that the world would be a better place without those virtual machine patents, I disagree with a couple of Google's statements on the copyright part of the lawsuit. The worst part to me is that Google suggests the creator of a large program should get away with a certain amount of unauthorized copying from someone else's work:

"Oracle has identified only twelve files -- out of the nearly one hundred thousand files that comprise Android -- that contain any materials (code or comments) that Oracle claims have been copied from Oracle's Works. [...] Finally, the portions of Android as to which Oracle alleges literal copying -- i.e., the twelve files identified in Oracle's interrogatory answer -- comprise in the aggregate less than one percent of Android and a similarly small percentage of the [Oracle's] Works. Even if such files were identical to Oracle files (which they are not), their use is de minimis and is not actionable."

This baffles all description. If you think about it, this "logic" would constitute a carte blanche for everyone with a large software project to steal smaller parts of other people's creations. Google's less-than-one-percent-claim may very well be true, but this kind of reasoning must be rejected altogether. Imagine a music publisher who puts out a collection of 101 songs and steals one or more of those songs from different other companies, but no more than one song per victim (and each victim has a repertoire of at least 101 songs). Mathematically, one song out of 101 is less than one percent, so in a world according to Google's lawyers there would be nothing wrong with this. This example shows that the proposed one-percent threshold would set a precedent that no law-abiding person could ever support.

[Update] I received a couple of questions from readers who were wondering whether the amount of code copied is comparable to a song, or much smaller than that. In my opinion, source code files containing entire Java classes are comparable to songs. I presented a number of files including 7 Java classes last month.

Google continues to defend itself vigorously. That's what it has to do, and the possible invalidation of one or more of Oracle's patents would fall under "collateral benefit" in my view. But if Google's attempt to undermine the rule of law in connection with copyright succeeded in any way, that would be bad news for authors -- not only programmers but also writers, composers and other creative people.

The patent part of the lawsuit is clearly the largest part of Google's problem. I guess what really has Google concerned about the copyright part of the case is that Google wouldn't want to be in a situation where it's found to infringe patents as well as copyrights and the question of damages for willful patent infringement comes up. In that context, the copyright part would really hurt the credibility of Google's claims that it never intended to infringe the patents-in-suit. We are talking about two distinct parts of the case, but in terms of how the court and at some stage a jury will view Google's behavior, the overall impression is going to be key.

All in all, I believe things are still going pretty much according to Oracle's plan. I don't see any reason for which Oracle would be under pressure to settle quickly and cheaply. Oracle knew that Google was going to defend itself, and I believe Oracle analyzed Google's small patent portfolio prior to going to court and determined that Google wasn't going to be able to mount a countersuit alleging that Oracle infringes any Google patents.

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Monday, February 14, 2011

Amid all the debate about whether Google's WebM video codec VP8 is truly patent-unencumbered and a valid alternative to the market-leading video codec (AVC/H.264), a very interesting project nearly went unnoticed: the development of a royalty-free MPEG video coding standard.

At a recent meeting of the Motion Picture Experts Group (MPEG), the decision was taken to issue a call for proposals (which will formally happen in March 2011) on video compression technology "that is expected to lead to a standard falling under ISO/IEC 'Type-1' licensing, i.e. intended to be 'royalty free'." The announcement also states the following:

"In recognition of the growing importance that the Internet plays in the generation and consumption of video content, MPEG intends to develop a new video compression standard in line with the expected usage models of the Internet. The new standard is intended to achieve substantially better compression performance than that offered by MPEG-2 and possibly comparable to that offered by the AVC Baseline Profile."

It's important to note the difference between MPEG, the standardization body, and MPEG LA, the licensing agency. MPEG defines standards, and those can be royalty-free or royalty-bearing, depending on what the owners of the essential patents agree upon in each case. MPEG LA manages patent pools related to royalty-bearing standards, serving right holders and licensees as a one-stop solution by way of aggregation.

Rob Glidden, a former Sun executive and digital TV expert, made me aware of MPEG's royalty-free codec plans via Twitter (thanks for that!). I found several interesting posts on his blog, such as this recent one arguing for a royalty-free video codec standard. Just like me, Rob appears to be somewhat skeptical of claims that WebM/VP8 is truly patent-free.

Google and its WebM allies (primarily Mozilla, Opera and the Free Software Foundation) wanted to pose a direct challenge to AVC/H.264, the incumbent and ubiquitous video codec. Their strategy was to seek adoption of WebM/VP8 as an Internet standard, claiming that it was the only format of its kind to be available on royalty-free, open-source-like terms. They thought they were already challenging the champion in the final match, but not so fast: MPEG LA may soon start collect royalties from VP8 adopters, and if MPEG's own royalty-free codec initiative succeeds, VP8 will have to beat it -- or be forgotten.

Using that tournament analogy again, VP8 is only in the quarter finals. MPEG LA's formation of a VP8 patent pool and MPEG's call for proposals on a royalty-free video codec are such important developments that the results they produce will have to be awaited before standardization on VP8 will even be seriously considered by the W3C or IETF. There is no rush because everyone can demonstrably watch Internet videos for the time being even though HTML 5's video tag is currently codec-agnostic.

I have drawn up a simple graphic that shows the three hurdles VP8 is facing:

If MPEG LA's patent pool for VP8 disproves claims that Google's codec is truly free of charge, it loses its intended unique characteristic and is out of the game. At that stage, even the Free Software Foundation may feel forced to withdraw its support. It wouldn't be possible for the FSF to advocate a royalty-bearing format.

Should VP8 overcome that hurdle, it would play a semifinal match against MPEG's royalty-free standard. I'll explain further below why this one is also going to be a tough challenge.

Only if VP8 survives that round as well, it will get to challenge AVC/H.264. To dethrone the reasonably-priced market leader, VP8 would have to deliver high quality, not just royalty-free availability.

Surmounting three significant hurdles in a row -- since failure at any of them means "game over" -- is really difficult. Even if one assumed a 60% chance in each case, the aggregate likelihood of success would just be slightly above 20%. In my opinion, VP8's chances are less than that. Let me explain my view on each of the three challenges.

1. MPEG LA patent pool for VP8

MPEG LA requests submissions of patents essential to VP8 until March 18, 2011. That's less than six weeks from the announcement. I presume MPEG LA already knows of a variety of relevant patents, and has discussed this with its membership. The first time MPEG LA CEO Larry Horn mentioned the possibility of such a pool was in an interview with AllThingsD in May 2010.

After the submissions deadline, MPEG LA's patent evaluators will make a determination as to which patents are truly essential to VP8. Obviously, whatever they conclude isn't the same as a judicial declaration of infringement. But MPEG LA is trusted by industry, and the moment it specifies the patents it believes read on VP8, Google and its allies will either have to invalidate those patents (which is unlikely to work for a reasonably long list) or prove that there isn't an infringement.

There could also be patents which VP8 infringes but which aren't submitted to MPEG LA in that process. I didn't mention that before, just to keep things simple at the time. When assessing the likelihood of VP8 truly being patent-unencumbered, this additional risk must, however, be taken into account.

2. Royalty-free MPEG video coding standard

It's plausible that MPEG can pull off a royalty-free coding standard. It will be able to draw from three types of patents for that purpose:

patents that have already expired

patents approaching expiration (which limits their commercial value)

patents whose owners are willing to forgo short-term revenue opportunities in favor of longer-term objectives, or who consider it a prudent strategy to support a royalty-free standard for web purposes and monetize related (but other) patents in other fields of use such as digital cameras and digital television

Codec development was already reasonably advanced in the early to mid 1990s, and US patents of that kind have a maximum term of validity of 20 years. Therefore, the first two groups of patents may already be sufficient to produce a codec at a level with, or even significantly superior over, VP8.

In order to compete successfully with a royalty-free MPEG standard, VP8 would have to be clearly better just to be considered. That's because MPEG has the backing of many vendors and offers an open and inclusive process. Under MPEG's stewardship, such a standard can continue to be developed (as new patents expire, approach expiration or are made available by their owners for other reasons) in a balanced, consensus-based way, while WebM is dependent upon Google, a company with specific strategic interests.

The argument that the availability of a WebM reference implementation on open source terms ensures vendor independence isn't sufficent. Theoretically, it's true that anyone could take it in a different direction. Practically, such forking would result in fragmentation, and it's doubtful that anyone would ever put significant resources behind such an effort.

3. Incumbent AVC/H.264 standard

Should VP8 really overcome the challenges previously described, it would still have to garner broadbased industry support. It wouldn't be in the interest of standardization bodies like the W3C and the IETF to formally declare a "standard" that fails to be adopted widely. Such failures can undermine the credibility and diminish the influence of those organizations.

AVC/H.264 isn't royalty-free, but its terms appear to be acceptable to a majority of industry players. In order to take any sizable part this incumbent's market share away, VP8 would have to be at least technically comparable. Degradations wouldn't be acceptable to consumers. However, my own impression and that of most of the opinions I read is that there's still a noticeable gap.

One of the challenges for VP8 is the limited number of hardware products supporting it. For hardware companies it's particularly important to be careful about patent-related risks. A software company may be able to just change its code. Hardware companies would be hit hard by injunctions or ITC import bans. VP8 faces a chicken-and-egg problem with the hardware industry, and the two new initiatives I described before will also have an effect in that area.

Google and its WebM allies won't give up. They are determined to turn this into a new edition of the "videotape format war" of the late 1970s and early 1980s. Looking at the drawing that shows the three hurdles and considering the facts, I have my doubts that they will get very far. However, even if the odds appear to be long against VP8, it may have a positive effect on the willingness of patent holders to support MPEG's royalty-free codec standard.

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Friday, February 11, 2011

A call for submissions issued by MPEG LA, the leading licensing entity for multimedia codecs, may provide a definitive negative answer to Google's claims that the VP8 video codec, which is part of its WebM set of codecs, is free from patent encumbrances.

When Google recently announced that its Chrome browser would drop the ubiquitous H.264 video format in connection with the HTML 5 'video' tag, many experts doubted that such a decision would really tip the scales in favor of Google's WebM/VP8 technology. For example, book author and ZDNet blogger Ed Bott asked whether Google was avoiding a trap or walking into one, and quoted a patent attorney who warned that "[a] codec is like a mechanical device with hundreds of parts. Any one or more could be the subject of a patent."

Google and its allies (particularly Mozilla and Opera) claimed that WebM was royalty-free and, therefore, uniquely suited for use in Free and Open Source Software.

In my opinion, claiming that a relatively late entrant can be "patent-unencumbered" in a field that's been a patent thicket for many years is just about as realistic as saying that you can walk safely through a minefield. It may be possible, theoretically speaking, but who would actually take the risk without a need?

Of course, anyone can make claims of that kind until there's evidence to the contrary. Some will believe such claims and some others won't even seriously think so but will, for strategic reasons, deny the threat in their public statements as long as they can.

Let me make this very clear: since I'm against software patents, I'd be happy to see a patent-free video codec put competitive pressure on dozens of major patent holders. But I make a clear distinction between what I'd like to see happen and what I consider realistic.

We may now be only a few months away from a definitive and potentially negative answer. Yesterday, MPEG LA published a call for patents essential to the VP8 video codec.

Such a call is the beginning of a formal process that will, if a number of such patents are submitted, most likely result in the creation of a patent pool. MPEG LA's patent pools aren't free of charge. They may allow free-of-charge use of their standards but only for particular purposes. In other words, "free" will be subject to field-of-use restrictions, and everything else will be charged for.

MPEG LA asks for initial submissions to be made by March 18, 2011. The focus will be on actually issued patents, but patent applications that are still being examined may also be submitted if considered essential.

MPEG LA's patent evaluators (legal and technical experts) will analyze all of the submitted patents to determine their "essentiality". In any standardization process, an "essential" patent is understood to be required for an implementation of the standard in question, as opposed to patents that may be somewhat related to it but not absolutely necessary.

A standardization or licensing entity can't be sure that all essential patents were actually submitted. Some patent holders may not be interested in participating. But the goal is to identify as many essential patents as possible.

After the essential patents for a proposed pool have been identified, there is always a negotiation between the contributing patent holders. They have to agree on the terms on which to make the entire pool available to licensees and on their internal revenue-sharing arrangements (which should be reflective of the value of the contributions made by the parties).

I don't know whether MPEG LA will publish the list of patents identified after technical evaluation of all submissions, or only after successful conclusion of commercial negotiations. The latter seems more likely to me. One way or the other, we may only be months away from seeing a list of patents found to read on WebM/VP8.

Should MPEG LA form a VP8-related pool, then they will approach WebM/VP8 adopters and ask for royalty payments. Since MPEG LA is an entity that means business when it comes to patent licensing, their demands for royalties won't just be ignored by commercial players interested in legal certainty. As a result, Google and its WebM allies would have to show that none of the patents identified are valid and infringed. For each patent, the proponents of WebM could either seek invalidation or try to prove that there isn't an infringement issue. Depending on the size and quality of the pool, that can be a formidable or practically insurmountable challenge. So much for free in that scenario...

I want to be frank. Despite my dislike for software patents, if I had to bet money, I would bet it on MPEG LA, not on Google.

MPEG LA has a pretty strong track record in codec patent licensing. One may or may not like their business model, but they clearly know what they're doing. By contrast, Google's flagship open source project, Android, has turned out to be a patent suit magnet.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

This morning Nokia announced its new strategy, a wide-ranging alliance with Microsoft, and the adoption of Windows Phone as its principal smartphone operating system.

I'm not going to comment on what this may or may not mean for the smartphone market like so many others. I'm looking at this from my special angle: that of a close observer of the smartphone patent wars, including Apple's dispute with Nokia, which this new alliance makes more likely to be settled amicably.

Microsoft and Nokia are both known for an in-depth understanding -- including at the highest level -- of the strategic importance of intellectual property rights in the knowledge-based economy. In 2003, Illka Rahnasto, Nokia's vice president of legal affairs and intellectual property, published a book on "Leveraging Intellectual Property Rights in the Communications Industry", which talks a lot about how Nokia views and uses patents in strategic ways.

Therefore, I'm sure those organizations also take patents into consideration when structuring such alliances as the one they just announced. More importantly, they will do so in going forward.

IP is Android's Achilles heel. I'm an Android user (who switched from a Nokia N97), but just looking at the facts, and Android has bigger IP issues than any other mobile platform. In no small part that's due to the weakness of Google's own patent portfolio. I also see indications that the Android team doesn't manage its software licenses well, and its apparent negligence also seems to expose OEMs to liability risks.

A company as sophisticated about IPR strategies as Nokia is less likely than many of its competitors to inherit such issues if it can be avoided.

AllThingsD published one of the most interesting reports in the build up to the actual Nokia-Microsoft announcement, and among the topics Nokia planned to discuss with the investment community today, I found this one particularly interesting:

"Friday’s investor meeting will also address other aspects of the company, including [among others] its plans to leverage its huge patent portfolio."

Last time I checked, Nokia had patented about 11,000 inventions, and we're not talking about a company that has been sitting around so far doing nothing with them. If they now plan to step up their IP activities, I they will seek to strike more outbound license deals with other industry players and will probably be less hesistant than in the past to take enforcement action against companies refusing to respect Nokia's intellectual property.

In his presentation to investors, Nokia CEO Stephen Elop said that they have "one of the strongest patent portfolios out there" and they are willing to license it to others "at an appropriate royalty rate." This translates as stepping up their outbound licensing efforts.

Nokia's head of investor relations later underscored the "tremendous value" that this activity can generate for shareholders.

One thing is for sure: the importance of patents in the smartphone industry will only continue to grow.

It's a tale of escalation, and at some point there must be a solution. Those two players may have the potential for mutually assured destruction, and they're not going to want that.

If Nokia had chosen Android, that conflict would have exacerbated, and Google wouldn't have strengthened Nokia in any meaningful way concerning patents. Apple is already enforcing patents vigorously against Android device makers HTC and Motorola (I also produced a visualization of that battlefield).

But Nokia decided against Android. The partnership between Nokia and Microsoft should make it much easier for Apple and Nokia to work things out between them and strike a cross-license deal:

I can't imagine that Apple would assert any of its patents against Windows Phone 7. Nokia is now covered by Microsoft as far as Windows Phone-based devices are concerned, and it's been a long time since Apple and Microsoft had (and settled) a patent dispute. They need each other.

Apple primarily asserts patents on touchscreen interfaces and other elements of modern day smartphones against Nokia. Now that Nokia has a partnership with Microsoft in place, it can deliver that kind of user experience anyway. It might still need a license to some of Apple's patents with a view to its other phones, but if all else failed, it could always use Windows Phone 7 even on lower-cost devices and solve the patent problem. Today's smartphone is tomorrow's feature phone. Therefore, Apple might as well make those patents available to Nokia on a cross-licensing basis.

In light of market dynamics, it would now make a whole lot of sense for Apple and Nokia to stop wasting resources on their fight with each other and instead focus on license deals with all those makers of Android-based devices.

I won't venture to predict when Apple and Nokia will finally settle, but I wouldn't be surprised if it now happened within a matter of months. Should it take longer than that, then it would have taken even longer if Nokia had picked Android.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

Wednesday, February 9, 2011

In a memorandum filed with the US District Court for the District of Northern California on Monday (February 7, 2011), Oracle accuses Google not only of stalling the legal process (without using the term "stalling" explicitly) but also claims the following:

"Having succeeded in that goal [Android's widespread adoption], Google now wants to throw its licensees and users under the bus, and feign ignorance of the uses to which its creation [Android] is being put."

This is quite an accusation. I'm an Android user myself (Samsung Galaxy S), and if someone says a vendor on whose software I rely is throwing me under the bus, I want to know what this is about. The short version is that this is indeed about whether Google assumes responsibility for intellectual property issues surrounding Android, or tries to hide behind the claim that once you put out open source software, it's none of your business what others do with it. "We're all right as long as we collect our mobile advertising revenue, and to hell with the consequences" -- that's how I would sum up that attitude.

This isn't just about Android. It's not even just about Google, although I'm profoundly concerned that its WebM video codec may be heading for Android-like patent problems that could affect an even larger number of companies. No, this is about what every company that publishes software on open source terms should do in this kind of situation: assume responsibility.

I would view this differently if we were talking about a group of hobbyist programmers who just happened to create something that became wildly successful. Everyone in open source knows Linus Torvalds' famous memo from 1991 about how he didn't (at the time) envision Linux to become big and professional, but it was a major success and it would have been unethical to go after him, a private person, with the same legal pressure one might exert on a large corporation.

In Android's case, there's a commercial entity -- Google -- behind it, seeking to generate billions of dollars of mobile advertising revenue in the long term. An analyst just predicted $1.3 billion for next year. Asserting rights against such a player sounds like fair game to me.

I wouldn't have granted even one of the seven patents Sun obtained and Oracle is now asserting, but those patents exist and there must be a solution that takes care of the entire Android ecosystem.

Think of that ecosystem as a pyramid: there's Google at the top; then you have its partners in the Open Handset Alliance (telcos, device makers, other commercial players); on the next level, Android device makers and telcos outside of the OHA; then all those app developers; and finally, the largest group, users like me. At every level of the pyramid there can be patent infringement problems. If a device maker adds a component that violates any patents, I would expect that vendor to take care of that problem and not pass it on to the downstream (such as users like me because I certainly don't want to be sued by someone like Oracle). And if a problem emanates from the very top, then it should be solved right up there.

A few weeks ago I published material that shows the presence of Oracle/Sun program code -- relicensed under the Apache license, something that I can't imagine Oracle ever authorized -- in the Android codebase (versions 2.2 and 2.3). And it wasn't only there: I could also find those files in the source availability packages of major Android device makers (Motorola, LG, Samsung, and I guess I could have found many more). Assuming there is a copyright problem, those could be held responsible for publishing (in that case) infringing material on their websites and possibly having incorporated it into their devices. Every lower level of the pyramid must be able to trust the upper level that intellectual property issues are handled diligently and resolved swiftly. I can't see any other way how it could work.

I've looked up the relevant filings by Oracle and Google to see what gave rise to Oracle's throwing-under-the-bus accusation. At this stage, it's just a burden-of-proof issue, but as I'll explain later, it can evolve into a more fundamental problem. In a February 2, 2011 filing, Google complained that Oracle's patent infringement allegations weren't sufficiently specific. Let me quote and then sum it up in simpler terms:

"These statements fail to provide Google with the requisite notice and particulars of Oracle’s infringement claims. For the method claims, Oracle has not identified any occasion on which the claimed method was allegedly performed, nor the identity of any purported direct infringer performing the method. With respect to the apparatus claims, it is Oracle’s burden to identify the allegedly infringing devices with specificity. Rather than comply with this requirement, Oracle has improperly attempted to place the burden on Google, asking Google to conduct analysis of all third party devices to disprove infringement."

This comes down to the question of whether the assumption is that each Android-based device actually infringes Oracle's patents (provided, of course, that Oracle firstly proves that the Android code published by Google infringes). Google would like to make things much harder for Oracle by requiring detailed evidence related to each infringing device. Oracle, however, argues that it has already met its burden of proof by providing claim charts with an aggregate volume of almost 400 pages. Oracle also stresses that Google controls the use of the Android trade mark, and a device maker won't be allowed to use it unless the products in question can run Android applications, in which case Oracle believes that the assumption must be that its virtual machine patents are infringed. This is how Google summed up Oracle's approach in its February 2 letter:

"[...] Oracle has instead [of providing device-specific evidence] relied on an unsupported assumption that any Android code that it has identified on a public repository has in fact been implemented and/or used in third party devices. Oracle’s reliance on such an assumption is unwarranted. Since at least October 4, 2010, when Google filed its Answer, Oracle has been on notice that '[d]evelopers are free to modify the source code of the Android platform to fit their particular purpose,' [...]"

The passage I just quoted appears to be an accurate representation of Oracle's stance. Here's what Oracle says (in its February 7 filing) in reply to this:

"Google knows quite a bit more about how Android is implemented and used than its letter to the Court suggests. For example, Google prohibits anyone from using the Android trademark unless their device is determined to be 'Android compatible.' [a related footnote contains this link to the Android licensing terms] Of significance to this lawsuit, through this licensing requirement, Google forbids device manufacturers from modifying aspects of Android that are copied from the Java platform: 'Android follows the package and class namespace conventions defined by the Java programming language. To ensure compatibility with third-party applications, device implementers MUST NOT make any prohibited modifications . . . to these package namespaces: java.*; javax.*; sun.*; android.*; com.android.*. . . . Device implementers MAY modify the underlying implementation of the APIs, but such modifications MUST NOT impact the stated behavior and Java-language signature of any publicly exposed APIs.' [a related footnote points to section 8 of the Android 2.2 Compatibility Definition] Through this and other licensing mechanisms, Google ensures that any device called 'Android' functions exactly as Google intended it to."

If Oracle's infringement assertions relate to program code in those namespaces (parts of the overall codebase) that "MUST NOT" be modified, then I would agree that Oracle can assume any officially licensed Android device uses that code. Anything else would run counter to Google's trade mark license, and from a more practical point of view, any tampering with those parts of the Android codebase could result in incompatibility with many or even all Android applications, and I can't see how a vendor would want that.

I guess some people who read that argument between Oracle and Google probably feel that it isn't going to be too important because Oracle has enough resources that it could hire forensic engineers (programmers who produce evidence for court cases like this) and provide claim charts for dozens or even hundreds of Android devices. Oracle would indeed be able to afford it if its life depended on it, but that's not an argument for the court. The court will have to protect the efficiency of the legal process because there will be other parties to such disputes who don't have deep pockets like Oracle.

Even for Oracle, efficiency is key. This lawsuit will cost them many millions of dollars even if it's handled efficiently. Oracle actually looked for the most efficient solution by seeking to enforce its right against Google, the top of the pyramid I described. If that approach was successfully obstructed by Google, Oracle would presumably feel forced to rethink its legal strategy.

Instead of holding Google responsible for the downstream, Oracle might then have to enforce its rights against device makers, telcos, app developers, or users. I doubt Oracle would sue every app developer or user out there, but developers of wildly successful apps could be at risk, and it wouldn't be a comfortable situation for corporate users that have thousands of Android devices in operation. I don't think they'd sue me (if I used my Android phone on a trip to the US) because I'm just a little guy, but no matter how unlikely that may be, I don't think it would be fair for me to face that risk at all. I'm a customer and I want the problem solved.

Oracle's accusation is an embarrassment for Google in more than one way. It's not just a question of whether they accept responsibility for the code they put out. If the court agrees with Oracle that those Android licensing terms are sufficiently strict that officially licensed device makers can be assumed to distribute the relevant code, then this will be like a certificate of non-openness for Android.

More and more people realize that Android isn't truly open. There are many strict rules, like the ones Oracle points to. It seems to me that those rules are strict wherever Google's own business interests (mobile advertising revenue, app market) are concerned, but lax enough in other areas to result in a major fragmentation problem. I've already experienced it several times when I had some questions about Android (such as how to upgrade to the latest version, or certain configuration options) and Facebook friends using other Android products (or the same type of device but with a different Android version installed) couldn't really help...

As I explained in my previous blog post (in which I discussed Myriad Alien Dalvik and IcedRobot, two initiatives aiming to make Android apps run on other platforms), fragmentation could furthermore be exacerbated by parts of the ecosystem deciding to work around some of Android's intellectual property issues.

So what should Google do? If Oracle's infringement assertions relate to the namespaces that officially licensed Android devices must contain without any alteration, then Google should withdraw its request for evidence specific to such licensed devices. Google has every right to defend itself against the infringement allegations per se (or to try to invalidate those Java patents, which would actually be a good thing), but it shouldn't claim things that don't make sense if it takes its own Android trade mark license terms seriously. And ultimately Google should resolve all of those Android IP issues at the top of the pyramid.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

Tuesday, February 8, 2011

Within days of each other there have been two different announcements related to the idea of making Android applications run on alternative platforms:

Myriad Group, a Swiss mobile software maker entangled in a two-way legal battle with Oracle over Java licensing issues, launched its Alien Dalvik platform, which allows Android apps to run on non-Android devices. Alien Dalvik "will be commercially available later this year on the MeeGo platform. Other platform support will be announced in the coming months. Alien Dalvik will be demonstrated for the first time on the Nokia N900 at this year’s Mobile World Congress in Barcelona from February 14th-17th".

A few days earlier, a group of open source developers gave a presentation at FOSDEM, a major European open source gathering, on a newly started project named IcedRobot. One of the founders of the project blogged about it today. The purposes for which IcedRobot is developed are described as "porting Dalvik outside the custom Linux sandbox", which means that Android applications could run on a Linux desktop as well as on operating systems from vendors like Apple and Microsoft, and "[p]ossibly resolve legal issues [with Oracle] if Dalvik runs inside the [Java Virtual Machine]". I gave comments on this announcement to different media, and was quoted by TechEye and ZDNet.

Let's look at both concepts from an intellectual property point of view. I'll focus on possible patent issues with Oracle because those can be broad and consequently hard to engineer around, while copyright-infringing code can usually be replaced with independently developed software.

Oracle started a lawsuit against Myriad in Northern California, and Myriad Group filed one in Delaware on the same December day. Oracle now claims "priority" for having pre-empted Myriad Group (but only by a matter of hours). That's why Oracle wanted the Delaware suit transferred to Northern California. However, the Delaware court rejected that motion at this point even though the judge found that Myriad's Delaware suit "is the mirror image of" Oracle's Northern California suit and agreed that "it makes no sense" to ligitate the two cases "in isolation". The dispute "should be resolved by the same judge", but "which judge?" The Delaware court may consider itself the right venue because Oracle is formally a Delaware corporation, can conduct discovery electronically from its California headquarters, and "Delaware, in fact, is mid-way between California and Switzerland and, therefore, is not an inconvenient forum based on any reasonable criteria."

The judge also stressed that "neither party wins 'good conduct' points" when considering "Oracle's filing suit in the middle of settlement negotiations and Myriad's walking away from its commercial obligations [Oracle alleges that Myriad simply stopped paying royalties] without first initiating some action to resolve the dispute or confirm its legal position".

In the same decision, handed on February 4, 2011, the judge indicated to Oracle that certain motions (which I believe relates mostly or exclusively to a Myriad motion to dismiss Oracle's suit) have to be ruled on in California before a (renewed) motion to transfer may be viewed more favorably by the Delaware court, and dismissed not only that motion but also a Myriad motion for injunctive relief, which would have been a fast track for Myriad to the objective of its suit. The judge didn't consider this as urgent as Myriad claimed it is, given that the Swiss company "waited over a year to bring its dispute with Oracle to court."

The judge highlighted those discrepancies between reality and the parties' claims in no uncertain terms, and I like such a direct style. I believe Oracle and Myriad know now that the federal judge in charge of their Delaware case has figured them out.

It seems to me that consolidation will most likely occur, but I won't speculate about where that will be and which place may be more favorable to whom.

In disputes like this, there's often some procedural wrangling over venues and consolidations, which doesn't mean too much on its own. However, the accusations flying between these two parties in their respective complaints suggest that they aren't going to find a common ground until one of them is on the verge of losing the case.

In terms of nasty behavior, Oracle's going to court in the middle of settlement negotiations sounds a bit rough, but what I absolutely don't like is the notion of a company -- in this case, Myriad Group -- honoring a license agreement for some time and then simply refusing to pay while continuing to sell its products. That behavior is contradictory in itself, and it's not the way to show respect for intellectual property. I agree with the Delaware judge that they shouldn't have stopped paying prior to legal action. Against that background, it actually seems to me that Oracle has been very patient with those guys, and that patience finally came to an end, so Oracle sued. It could -- and I guess many others in the same situation would -- have done so long before.

Launching a product like Alien Dalvik during a court fight with Oracle over possible licensing obligations is a bold move on Myriad's part. It's not as bold as Myriad's original decision to discontinue its royalty payments, but I wouldn't be surprised if Oracle considered this yet another act of provocation.

I'm well aware of the fact that Dalvik is a virtual machine that uses its own bytecode, and it has an architecture that's distinct from that of a standard Java Virtual Machine. However, Oracle's suit against Google shows that it interprets the asserted Java-related patents in ways that affect a Dalvik-style virtual machine as well. I have looked at the patent claims (the part of the patent documents that defines the scope of protection) and those are fairly broad. There are probably some other Java-related patents that are much more narrowly tied to that particular programming language, but the patents Oracle asserts against Google relate to fundamental technological concepts. For my part, I'm against patents of that kind, but I try to understand what damage they can do. Those patents are, unless they are invalidated, a potential major threat to most if not all state-of-the-art virtual machines of our times.

So far, Oracle hasn't sued Myriad for patent infringement. I don't know if Oracle will ignore Alien Dalvik until it has (if ever) significant traction in the market. But if it succeeded, I can't imagine that Oracle wouldn't want to collect royalties. It won't be able to do so from Google if Alien Dalvik is an independent Myriad product (it probably is) and runs on non-Google platforms like MeeGo. So Oracle might at some point assert its rights against Myriad Alien Dalvik as well.

Oddly, that Alien Dalvik offering could have a negative effect not only on Myriad's relationship with Oracle (which probably can't get much worse at this stage) but also on its alliance with Google. As I mentioned when I reported on the suit Myriad filed against Oracle, Myriad is represented by the same law firm that defends Google against Oracle, and at least one senior lawyer is involved with both cases. Myriad's claims against Oracle would indirectly also benefit Google's case, and Myriad is a member of the Open Handset Alliance led by Google. Considering all of that, I believe that they have coordinated those efforts closely, and possibly more than that.

Now Alien Dalvik aims to make Android apps run on platforms from which Google has no particular commercial benefit. Google might look at it as a way to increase the attractiveness of Android as a development platform and hope that the net effect is positive. But Alien Dalvik could also encourage users to switch from Android to other platforms while keeping their apps. Depending on whether Google considers the glass half-full or half-empty, Alien Dalvik might adversely affect the relationship between Google and Myriad.

I admire the IcedRobot team for embarking on such an ambitious project. They express a certain belief that Google and Oracle will have mixed feelings about what they do, but I actually think that those companies will secretly hope that the IcedRobot idea never materializes.

Google's strategy with Android is to avoid the GPL to the greatest extent possible. Google wants to accomodate proprietary extensions that Android device makers may consider valuable for differentiation purposes. Oracle, however, looks at the mobile market as a key area in which it seeks to monetize Java. In this area, Oracle insists on one of its field-of-use restrictions for third-party Java implementations. Oracle made the OpenJDK available on GPLv2 terms and, consequently, without such restrictions, but the assumption was that commercial vendors would ultimately be willing to pay for non-GPLv2 licenses in order to avoid the "copyleft" effect of having to release software derived from GPL'd code on GPL terms. Google wanted to avoid the GPL in connection with its Dalvik virtual machine as well but claims that it doesn't need a license from Oracle anyway.

The IcedRobot team now tries to build a virtual machine as a derivative work based on the GPL'd OpenJDK.

For Oracle, that approach is acceptable up to a certain point, but if the IcedRobot team really achieves its stated goals, it may by then have modified and/or extended the OpenJDK code to an extent that Oracle could deem to exceed the scope of the GPLv2's implicit patent license. By publishing the OpenJDK under the GPLv2, Oracle implicitly makes its patents available to users. But I explained in an August 2010 blog post that the implicit patent license is considered by credible and unbiased sources, such as the European Commission, to have certain limits.

Obviously, there must be a limit somewhere. It wouldn't be reasonable for someone to take code published by a patent holder under the GPL and extend and modify it way beyond recognition while still claiming that the use of the patents in question was implicitly allowed. Depending on what exactly the developers of IcedRobot do, the way they practice the inventions protected by certain Oracle patents may fall outside the scope of an implicit patent license.

One of the developers of IcedRobot wrote that "if [they] succeed, the whole [Oracle/Google] lawsuit is going to be a bad dream of the past". That sentence alone makes it clear that IcedRobot's goal is not only to make Android apps run on other platforms (such as the Linux desktop) but also to develop something that might be a replacement for Dalvik if Google is defeated by Oracle in court. Unfortunately, those hopes of overcoming the patent infringement issues may be too optimistic. One day -- possibly after years of hard work -- they may find themselves in court anyway. I wish them luck but I'm worried that the scope of some of Oracle's patents may be broader than that of the implicit patent license.

What's also important to consider is that the implicit license would only relate to patented inventions actually practiced in OpenJDK. If Oracle held any patents that read on extensions or modifications made by the IcedRobot team but not on the original OpenJDK, it would be able to assert them.

Besides the GPLv2's implicit patent license, the developers of IcedRobot may also base some of their hopes on the fact that their Java implementation isn't going to be specific to mobile devices, but Oracle has already shown in its argument with the Apache Software Foundation that it's very serious about its field-of-use restrictions.

Looking at it from Google's perspective, the idea of Android apps running on Apple and Microsoft platforms (which is where Alien Dalvik could also go, but initially it focuses on MeeGo) may not be too desirable.

More importantly, after Oracle filed its suit against Google, various members of the open source community argued that Google should have built Dalvik on the basis of the OpenJDK as opposed to the Apache Harmony project. IcedRobot is now a community initiative that exposes Google's anti-GPL approach by outlining (and trying to actually implement) a fully GPL-based alternative.

Another negative aspect of this for Google is the way the IcedRobot team talks about "legal issues" (concerning Dalvik) and the "bad dream" that Oracle's lawsuit against Google is. They even talk about how far-reaching the implications of Oracle defeating Google could be. That's not reflective of the kind of confidence Google would like the open source community to have. Google would like everyone to believe that it's going to defend itself successfully, and now there are developers who appear quite skeptical of the outcome of that dispute and determined that they want to take their destiny into their own hands.

Alien Dalvik appears to be pretty far along while IcedRobot is, at this stage, mostly a vision. Alien Dalvik is developed by a publicly traded company (even if only a small-cap company by international standards) while IcedRobot is the project of a small team. Alien Dalvik appears to be a limited engineering challenge while IcedRobot plans to replace significant parts of Android. Considering all of that, the risk of IcedRobot remaining vaporware is far greater than that of Alien Dalvik.

But from an IP perspective, IcedRobot would have a fundamental advantage over Alien Dalvik: by deriving the virtual machine-related part of its code from the GPL'd OpenJDK, IcedRobot can use the GPLv2's implicit patent license for a defense against Oracle, while Alien Dalvik is an independent commercial product that was apparently developed without incorporating any OpenJDK code (otherwise it would be available under the GPL).

It will take a long time and considerable traction in the market before either Alien Dalvik or IcedRobot are going to be in a position to represent a significant additional reason for developers to choose the Android platform. It's difficult to predict today, in such a fast-changing market, whether Google will have a bottom-line benefit from those initiatives at the time when they are relevant.

For Oracle I believe it will be strategically key to collect royalties on Alien Dalvik. Should IcedRobot materialize, it's not only going to be harder for Oracle to assert its rights but it would also be easier for Oracle to tolerate an OpenJDK fork with the GPL copyleft effect than a commercial, proprietary product -- but that determination could depend on complex technical considerations at the relevant time.

And let's face it: such initiatives, however well-meant, have the potential to exacerbate the often-criticized fragmentation of the Android platform.

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About Me

Florian Mueller is a former award-winning intellectual property activist with 25 years of software industry expertise spanning across different market segments (games, education, productivity and infrastructure software), diverse business models and a variety of technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof.) He is now developing a game app for smartphones and tablet computers.